Before National Arbitraional Forum
Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC v. Zhichao Yang
Claim Number: FA2012001923923
In the said matter, the Complainants were Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC, while the Respondent Mr Zhichao Yang from China.
The domain names at dispute were enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The Panelist appointed was Mr. Paul M. DeCicco.
The Complainat Companies, namely Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC, are engaged in running and operating separate rental car companies throughout the world. They hold Trademark registration for ENTERPRISE, NATIONAL, and NATIONAL CAR RENTAL in USA having registered with USPTO.
Complainant alleged that the Complaint was within the preview of NAF Rules read with WIPO Overview:
Complainant Enterprise Holdings, Inc. is the parent company of Enterprise Rent-A-Car and National Car Rental and owns the trademarks related to Enterprise Rent-A-Car. Complainant Vanguard Trademark Holdings USA LLC, is an affiliate of Enterprise Holdings, Inc. and owns the trademarks related to National Car Rental. As a result, both Complainants own and license service marks to operating subsidiaries in the car rental business. Respondent has targeted the trademarks owned by both Complainants in a similar fashion. In light of the common issues and the conduct of Respondent related to both Complainants it would be equitable and procedurally efficient to permit the requested consolidation. Complainants further submit that their request meets the relevant criteria that were set forth in Section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Preliminary issues considered by the Panelist was:
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” (emphasis added). The trademark registration records presented in Complainants’ Addendum concerning the at-issue domain names indicates that the trademarks that form the basis of the dispute under Policy ¶ 4(a)(i) are not held by a common entity.
The Panelist held that the Complainants have not provided any details regarding the nature of the “specific common grievance” or what “individual rights” they are referring to or how they are related to one another. Furthermore, Complainants offer no evidence of the details of the relationship (nexus) between the two Complainants which might indicate that both Complainants have rights in the each of the ENTERPRISE, NATIONAL, and NATIONAL CAR RENTAL trademarks such that each Complainant can “claim to have rights to all domain names listed in the complaint.” Argument that the relevant trademarks may have been “targeted in a similar fashion” or that both Complainants have trademarks in the same area of commerce, i.e. car rentals, is unavailing as to each Complainants’ rights to all the at-issue domain names.
Given the foregoing the record fails to show that joining the two Complainants is proper under Supp. Rule 1(e). Rather than arbitrarily retaining one of the Complainants and its relevant mark(s) and striking the other Complainant and its relevant mark(s) and then proceeding to a decision on the merits regarding the remaining Complainant, the Panel dismisses the dispute in its entirety.
Having found that the Complainants are misjoined pursuant to Supplemental Rule 1(e), accordingly it is Ordered that the instant dispute be dismissed.